Kranco Browning, Inc.

Trademark Trial and Appeal Board

Aug 17, 1999

No. 75086700 (T.T.A.B. Aug. 17, 1999)

Paper No. 14
CEW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG. 17, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re Kranco Browning, Inc.
___________
Serial No. 75/086,700
___________
Joseph Schaeff of Killworth, Gottman, Hagan & Schaeff for
applicant.
Richard A. Straser, Trademark Examining Attorney, Law
Office 104 (Sydney Moskowitz, Managing Attorney).
____________
Before Simms, Walters and Wendel, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
Kranco Browning, Inc. has filed a trademark
application to register the mark ORLEY MEYER for “cranes,
hoists and parts therefor,” in International Class 7, and
“installation, inspection, maintenance, repair, upgrading,
Serial No. 74/498,247
2
and modernization services in the field of cranes and
hoists,” in International Class 37.1
The Trademark Examining Attorney has finally refused
registration on the ground that the specimens of record are
unacceptable evidence of use of the mark in connection with
the services identified in the application.2
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusal to register.
Applicant originally filed two different specimens
with its application. “Specimen 1” is a decal showing the
mark in the following context:

1 Serial No. 75/086,700, filed April 10, 1996, based on use of the mark
in commerce in each class, alleging dates of first use and first use in
commerce at least as early as 1963.
2 This application contains two classes, identifying goods in
International Class 7 and services in International Class 37. The
final requirement for substitute specimens pertains only to the
specimens in connection with the services identified in Class 37. The
issue on appeal pertains only to this requirement with respect to the
services identified in Class 37. However, as applicant has not
requested a division of this application, unless applicant should
ultimately prevail in an appeal of the Board’s decision, the Board’s
affirmance of the refusal to register will result in the abandonment,
in due course, of the entire application. Unlike an offer of
disclaimer after issuance of a decision in an appeal (See, Trademark
Rule 2.142(g)), the Rules of Practice do not permit the reopening of an
appeal to accept a request to divide or a declaration in support of
substitute specimens.
Serial No. 74/498,247
3
“Specimen 2” is a photocopy of what appears, in view of the
nail or screw holes in each corner, to be a plaque that is
approximately 10 inches by 3½ inches. The following is a
reproduction:
In response to the Examining Attorney’s initial
requirement for substitute specimens in support of the
services identified in International Class 37, applicant
characterized its specimens of record as including
“photographs of signs which are used in connection with
applicant’s goods and services [and are] attached to
applicant’s goods and also to applicant’s trucks.”
Applicant included line drawings of trucks showing an OM
design thereon that includes, in small print at the bottom,
the words ORLEY MEYER.3

3 Unlike photographs, these line drawings do not show use of the mark on
trucks.
Serial No. 74/498,247
4
In response to the Examining Attorney’s final
requirement for acceptable service mark specimens,
applicant stated “[t]he specimens in question consist of
business cards, letterhead and envelopes bearing the mark
for which registration is sought.”4 Applicant included with
this response a photocopy of applicant’s brochure, which
clearly shows the mark and indicates both goods and
services of the type identified in the application.
Additionally, applicant submitted excerpts of articles from
the LEXIS/NEXIS database about applicant’s company.5
Applicant characterized these submissions as “supplemental
specimens” and, thus, stated that no declaration regarding
use was required.
The Examining Attorney reinstated the finality of his
requirement for substitute specimens, noting that the use
of such specimens must be verified by applicant as the
record contains no acceptable verified specimens in support
of the identified services.
With its notice of appeal, applicant requested
reconsideration and submitted samples of blank letterhead

4 We note that this statement completely contradicts applicant’s earlier
statement describing the nature of the specimens. Considering the
specimens themselves, the Board questions whether either statement
adequately describes the nature of the specimens of record.
5 Articles discussing or describing applicant and authored by third
parties are not, under any circumstances, evidence of use of the mark
by applicant for either goods or services.
Serial No. 74/498,247
5
stationery, business cards and envelopes. Applicant
declined to submit a declaration in support of this
submission as well.6 The Examining Attorney denied the
request for reconsideration, noting that the recent
submission does not contain thereon any indication of the
nature of the services and, thus, is unacceptable as
supplemental material because the material does not explain
or corroborate the original specimens. The Examining
Attorney added that this submission does not qualify as
substitute specimens since use of these items in connection
with the identified services since at least as early as the
filing date of the application had not been verified.7
From a review of the record, this appears to be a case
where clear communication and an understanding of the
Trademark Rules of Practice might have avoided this appeal
altogether or, at least, simplified the issues. It appears
that the advertising brochure, at least, might have been an
acceptable specimen of use if it had been properly

6 We note that, in its brief, applicant incorrectly identifies as the
specimens of record, the letterhead stationery, business card and
envelope submitted with its request for reconsideration. However, as a
verification of the use of this material at least as early as the
filing date of the application was never submitted, this material is
not considered the specimens of record.
7 Applicant is required to submit an affidavit or declaration attesting
to use of the mark, on the specimens submitted, since at least as early
as the filing date of the application. See, Trademark Rules 2.58 and
2.59, 37 CFR 2.58 and 2.59.
Serial No. 74/498,247
6
verified. However, the specimens of record consist of the
previously-referenced decal and plaque.8 Thus, the sole
question before us is whether the specimens of record are
acceptable as evidence of service mark use in connection
with the identified services.
It is well established that a term used as a trademark
may also perform the function of, and be registered as, a
service mark, provided that the specimens in the service
mark application show the mark used or displayed in the
sale or advertising of services, as distinguished from use
on goods. In re El Torito Restaurants, Inc., 9 USPQ2d 2003
(TTAB 1988); Amica Mutual Insurance Company v. R. H.
Cosmetics Corp., 204 USPQ 155 (TTAB 1979); In re Restonic
Corporation, 189 USPQ 248 (TTAB 1975) and cases cited
therein. The term “service mark” is defined, in pertinent
part, in Section 45 of the Trademark Act, 15 U.S.C. 1127,
as “any word, name, symbol, or device, or any combination

8 The specimens of record are the specimens originally submitted with
the application, i.e., the decal and the plaque. There is no question
that the additional material submitted by applicant (i.e., the drawings
of trucks, the advertising brochure, the LEXIS/NEXIS excerpts, and the
blank letterhead stationery, business card and envelope) cannot be
considered as substitute specimens as no verification under Trademark
Rule 2.59 was filed in connection with any of this material. Thus, it
is unnecessary to address applicant’s and the Examining Attorney’s
arguments in this regard. The only additional inquiry is the extent to
which this “supplemental” material renders the specimens of record
acceptable as evidence of use of the applied-for mark in connection
with the identified services.
Serial No. 74/498,247
7
thereof (1) used by a person . . . to identify and
distinguish the services of one person, including a unique
service, from the services of others and to indicate the
source of the services, even if that source is unknown.”
As the Board stated in In re Moody’s Investor’s Services,
Inc., 13 USPQ2d 2043, 2047 (TTAB 1989),
Implicit in this statutory definition is a
requirement that there be a direct association
between the mark sought to be registered and the
services specified in the application, i.e., that
it be used in such a manner that it would be
readily perceived as identifying such services.
(citations omitted.)
In this case, we are not determining whether applicant
actually offers the identified services. Rather, we are
determining whether ORLEY MEYERS functions as a service
mark in connection with the recited services, which
necessarily depends on how that term is used and how it is
perceived by potential recipients of the services. To
determine what the perception of a term is, we must look to
the specimens of record which show how the term is used in
the marketplace. In re Walker Research, Inc., 228 USPQ 691
(TTAB 1986).
In this regard, there is no requirement that the
specimens must, in all cases, contain a statement as to the
nature of the services. See, In re Metriplex, Inc., 23
USPQ2d 1315 (TTAB 1992); In re Eagle Fence Rentals, Inc.,
Serial No. 74/498,247
8
231 USPQ 228 (TTAB 1986). However, while the nature of the
services does not need to be specified in the specimens,
there must be something that creates in the mind of the
purchaser an association between the mark and the service
activity. In re Johnson Controls Inc., 33 USPQ2d 1318,
1320 (TTAB 1994).
In the present case, it is our view that no such
association can be made between the mark and the service
activity from the specimens of record. The specimens of
record contain no indication, either direct or implicit,
that applicant renders the identified services of
maintenance, repair, etc. of cranes and hoists. To the
contrary, the specimens merely identify the entity that is
applicant.
Further, the supplemental materials bear no
relationship to the specimens of record, thus, they cannot
be considered to truly “supplement” the specimens of
record. Nor, as applicant argues in its brief, do these
materials “further illustrate” applicant’s activities. The
term “further” implies that the original specimens
illustrate the nature of applicant’s services, which they
do not. The supplemental materials do not include any
photograph of either the decal or plaque appearing as a
sign on applicant’s service center or as a sign on a truck
Serial No. 74/498,247
9
clearly used for rendering the specified services, any of
which would supplement the specimens of record in a way
that indicates their use of the mark in connection with the
identified services. Since we have already concluded that
the supplemental material cannot substitute for the
original specimens, as none of this material meets the
requirements of Rule 2.59, it is unnecessary to consider
whether the individual supplemental items would be
acceptable specimens of service mark use if properly
verified.
Serial No. 74/498,247
10
Decision: The refusal is affirmed on the ground that
the Examining Attorney properly required substitute
specimens because the specimens of record do not evidence
use of the mark as a service mark in connection with the
services identified.
R. L. Simms
C. E. Walters
H. R. Wendel
Administrative Trademark Judges,
Trademark Trial and Appeal Board